DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I (claim(s) 1, drawn to “A hole machining method”) in the reply filed on 7/20/2026 is acknowledged.
Claims 2-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/20/2026.
Claim Objections
Claim 1 is objected to because of the following informalities: On line 6 of the claim, “a threaded groove” should be amended to “[[a]] the threaded groove”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On line 6 of the claim, “it” should be amended to “[[it]] the tap tool”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On line 13 of the claim, “it” should be amended to “[[it]] the tap tool”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Lines 9-10 of claim 1 state, “moving the tap tool in an interior of the pilot hole toward the non-engaging part in a direction orthogonal to the first axis line.” This limitation is viewed to be vague and indefinite, because as claimed, it is unclear as to what exactly is meant by the tap tool being moved (in an interior of the pilot hole) toward the non-engaging part. In other words, because the non-engaging part is an element of the tap tool, how or in what way is the tap tool moved toward itself? By being moved “toward the non-engaging part,” is the tap tool actually being moved in an interior of the pilot hole in a direction orthogonal to the first axis line into at least a portion of the claimed space formed between the non-engaging part and the pilot hole?
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Japan Pub. No. JP 2020168698 A (hereinafter JP '698).
Please be advised that JP '698 was cited on the Information Disclosure Statement (IDS) that was filed on 10/9/2025.
Please also be advised that an EPO Machine Translation of JP '698 is relied upon below. This EPO Machine Translation of JP '698 was previously provided with the Requirement for Unity of Invention that mailed on 6/8/2026.
Claim 1: JP '698 discloses a hole machining method using a tap tool (10) which rotates about a first axis line (CR) that can be seen in Figure 1 of JP '698. Noting this, Figures 2 and 3 of JP '698 show the tap tool (10) as comprising a threaded part (14) which has a blade (14a) for machining a threaded groove in a pilot hole (6') (please see Figure 1) in a workpiece (8). Next, Figures 3 and 4 of JP '698 show the tap tool (10) as further comprising a non-engaging part (17) which forms a space (20) (see at least Figure 4) between itself and the pilot hole (6') in a cross-sectional view in which the first axis line (CR) and a center axis (C6) of the pilot hole (6') are aligned [EPO Machine Translation, paragraph 0021].
The hole machining method further comprises machining a threaded groove in the pilot hole (6') by rotating the tap tool (10) [EPO Machine Translation, paragraph 0018] and advancing it toward the workpiece (8) [EPO Machine Translation, paragraph 0008] in a first state in which the center axis (C6) of the pilot hole (6') and the first axis line (CR) are aligned. Please note that Figures 4 and 5 of JP '698 show this alignment.
The hole machining method of JP '698 further comprises moving the tap tool (10) in an interior of the pilot hole (6') toward the non-engaging part (17) in a direction orthogonal to the first axis line (CR) [EPO Machine Translation, paragraph 0009]. This movement can be seen in Figure 5. As a result, the tap tool (10) is brought into a second state in which engagement between the threaded part (14) and the threaded groove is released.
Lastly, the disclosed method comprises withdrawing the tap tool (10) [EPO Machine Translation, paragraph 0027] “along”/next to/beside the center axis (C6) direction of the pilot hole (6') to retract the tap tool (10) from the threaded hole.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nannen (U.S. Patent No. 4,090,808 A) shows in Figures 1-2 thereof a tap tool (10) which comprises a threaded part (13) which has a blade that is used to cut threads (20) in a workpiece (21). The tap tool (10) further comprises a non-engaging member (30). In carrying out a method of using the tap tool (10), Figure 3 shows machining a threaded groove (20) by rotating said tap tool (10).
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/MICHAEL VITALE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722
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